WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salton, Inc. v. George Foreman Foods, Inc.
Case No. D2004-0777
1. The Parties
The Complainant is Salton, Inc., a Delaware corporation with a place of business in Lake Forest, Illinois, United States of America, and is represented by Sonnenschein Nath & Rosenthal, United States of America.
The Respondent is George Foreman Foods, Inc., a Delaware corporation with a place of business in Omaha, Nebraska, United States of America, and is represented by Berkshire & Blunk, United States of America.
2. The Domain Name and Registrar
The disputed domain name <georgeforeman.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 24, 2004. On September 27, 2004, the Center transmitted by e-mail to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 29, 2004, the Center received from Network Solutions a verification confirming that Respondent is listed as the registrant for the domain name, indicating that it had “locked” the domain name, confirming several details of its registration agreement, and providing the Center with contact information for the administrative and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with Rules 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 5, 2004. In accordance with Rule 5(a), the Response was due 20 calendar days later, on October 25, 2004. The Response was filed with the Center on October 25, 2004.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 4, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rule 7.
Subsequently, on November 6, 2004, Complainant submitted to the Center, by e-mail, a Request for Leave to File a Supplemental Submission, along with a proposed Reply and an Annex to the Reply. Complainant’s request stated that it “had no way of knowing that Respondent would answer [the Complaint] with such extraordinary and misleading statements” and requested an opportunity to submit a reply.
In Procedural Order No. 1, dated November 10, 2004, the Panel, pursuant to its discretion under Rules 10 and 12: (1) granted Complainant’s request to the extent that it presented new, pertinent facts that had not arisen, or responded to arguments or rebutted facts that could not have been reasonably anticipated, as of the time that the Complaint was filed and (2) granted Respondent until November 16, 2004 to file a supplemental submission limited to rebutting or responding to new facts or arguments raised in the Reply. In light of the need to consider the Reply, provide time for a possible submission by Respondent, and the Thanksgiving holidays in the United States, the Panel found that “exceptional circumstances,” within the meaning of Rule 15(b), warranted an extension of time until December 3, 2004 for forwarding its decision to the Center.
Respondent filed a supplemental submission on November 16, 2004 and the next day forwarded a revised submission, indicating that the wrong document had been forwarded the previous day.1
4. Factual Background
Complainant acquired from internationally-known boxer and spokesperson George Foreman the right to use Mr. Foreman’s name in connection with products used for preparing, cooking, and serving foods and beverages, including the well-known “George Foreman Grill.” Complainant owns trademarks and trademark registrations for the mark GEORGE FOREMAN for such products in the United States and elsewhere. According to the Complaint, Complainant has for many years used the GEORGE FOREMAN marks, in the United States and elsewhere, since 1995.
The <georgeforeman.com> domain name was registered in 1998. Pursuant to a license from Mr. Foreman, the status of which is disputed, Respondent uses the “www.georgeforeman.com” website to advertise and sell meat and other food products.
5. Parties’ Contentions
Complainant makes the following contentions:
Complainant’s federal trademark registrations, along with the copies of pages of its website and the other information that it has submitted, demonstrate its rights in the GEORGE FOREMAN marks. Pursuant to a 1999 agreement, Complainant acquired -- from Mr. Foreman, who also acts as a spokesperson for the “George Foreman Grill” -- the right to use Mr. Foreman’s name and likeness in connection with food preparation, cooking, and serving products. In addition, Complainant and Mr. Foreman have become associated with all foods that are capable of being grilled.
The disputed domain name is confusingly similar to Complainant’s marks because it is identical except for the addition of “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent’s use of the disputed domain name. Although Respondent was licensed by Mr. Foreman to use Mr. Foreman’s name and endorsement in connection with the sale of “food and food products” and products and services sold via certain websites, Complainant believes that that license agreement has been terminated.
In its Reply, Complainant challenged Respondent to provide evidence that Mr. Foreman supported Respondent’s efforts to retain the disputed domain name. In addition, the Reply also indicated that after the Complaint was filed, Mr. Foreman filed a lawsuit in federal court in the United States alleging unauthorized use of his name and likeness by one of Respondent’s principals, among others. That complaint alleges that Mr. Foreman’s license agreement with Respondent has been terminated.
Complainant asserts that: (1) the license agreement between Respondent and Mr. Foreman prohibited Respondent from interfering with Complainant’s agreement with Mr. Foreman; (2) Complainant’s trademark rights in the GEORGE FOREMAN marks predate Respondent’s rights; (3) Complainant has acquired secondary meaning in its GEORGE FOREMAN marks; (4) the <georgeforeman.com> domain name infringes Complainant’s trademark rights.
Respondent’s use of the domain name is neither a legitimate non-commercial use nor a fair use of the domain name. Respondent is using the “www.georgeforeman.com” website for its own commercial gain. The website attracts consumers who are seeking Complainant’s website and diverts them by offering confusingly similar products.
Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, visitors to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website:
(1) Respondent uses the domain name to attract visitors who are seeking Complainant’s GEORGE FOREMAN products and offers them instead Respondent’s food products, which are related to grilling.
(2) Respondent’s website makes widespread use of Mr. Foreman’s name and marks.
(3) Respondent’s website refers to, and purports to sell, Complainant’s GEORGE FOREMAN products.
(4) Respondent’s website uses other elements associated with Complainant, such as Complainant’s KNOCKOUT THE FAT mark, a photograph of Mr. Foreman, and color scheme.
(5) Respondent has continued its use of the domain name despite two demand letters from Complainant.
Respondent makes the following contentions:
Respondent acknowledges that Complainant has rights in certain GEORGE FOREMAN marks, conceding that the addition of “.com” does not make the disputed domain name dissimilar, but points out that Respondent’s rights are limited to “food preparation apparatus and appliances.” Respondent also alludes to other United States trademarks that include the name “George Foreman,” which are owned by third parties.
In the case of a domain name that consists of the name of a celebrity, the issue should be whether the disputed domain name causes confusion, not whether it is identical to the Complainant’s mark. Under that analysis, the <georgeforeman.com> domain name is not confusingly similar to Complainant’s marks because the name “George Foreman” is independently associated with the legendary boxer. It is only when the term “grill” is added that Complainant and its products are brought to mind.
Mr. Foreman and his representatives originally created the “www.georgeforeman.com” website. Pursuant to a January 2003 license agreement, Mr. Forman granted Respondent rights to the domain name and website. Further, the “www.georgeforeman.com” website serves to direct visitors to Mr. Foreman’s personal websites. Visitors to the “georgeforeman.com” website are not likely to believe that Complainant is associated with Respondent’s food products and website, but rather to understand that Mr. Foreman, who endorses both parties’ products, is associated with the website.
Respondent has rights or legitimate interest in the <georgeforeman.com> domain name. Respondent has been licensed by George Foreman to use the name “George Foreman” in connection with food products. The same agreement transferred to Respondent, during its term, several domain names, including <georgeforeman.com>.
Respondent acknowledges that its license agreement with Mr. Foreman is the subject of an ongoing arbitration but contends that the issues in the arbitration involve whether or not the license has been terminated and that it continues to have right (and duties) under the agreement until the agreement is actually “ruled terminated.” In its response to Complainant’s Reply, Respondent provides two letters from counsel to Mr. Foreman. The first of those letters, dated October 5, 2004, states that in the arbitration proceedings, Mr. Foreman is seeking the “return” of the website and domain name. The letter goes on to demand that Respondent eliminate any infringing material from the “www.georgeforeman.com” website and protect the domain name.
Respondent has used the domain name to make a bona fide offering of licensed George Foreman food products.
Respondent has not registered and is not using the disputed domain names in bad faith:
(1) Mr. Foreman and his representatives, not Respondent, registered the domain name before entering into a relationship with Respondent. Accordingly, Respondent did not register the domain name in order to sell the name to Complainant, prevent Complainant from using the domain name, or disrupt Complainant’s domain name.
(2) Respondent uses the domain name to sell its licensed products, act as an informative website for Mr. Foreman, and to provide links to other websites associated with Mr. Foreman. Those included links to other sites where Complainant’s GEORGE FOREMAN products can be purchased. Respondent denies that it sells Complainant’s products and represents that those links have now been removed.
(3) Respondent’s use of the domain name and the content of the website are subject to review and approval of Mr. Foreman, pursuant to the license agreement.
(4) Any other issues pertaining to the content of the website, except on the issue of bad faith, are outside the scope of this proceeding.
6. Discussion and Findings
A. Procedural Matters
(1) Supplemental Submissions
It is worth noting that neither the Rules nor the Supplementary Rules provide for the filing of submissions other than a complaint and response.
Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. [citation omitted].
See Document Technologies, Inc. v. International Electronic Communications, Inc. (WIPO Case No. D2000-0270). Rule 12 does permit the Panel to request further documents and statements. Such requests always involve balancing the provisions of Rule 10, which require the Panel to ensure both that “each Party is given a fair opportunity to present its case” and that the proceeding takes place with “due expedition.”
The Panel is of the view that supplementary submissions are appropriate only in exceptional cases for reasons that may include the existence of new, pertinent facts that did not arise until after the party’s submission or the need to bring new, relevant legal authority to the attention of the Panel. See Document Technologies, Inc. v. International Electronic Communications Inc. (WIPO Case No. D2000-0270). To seek or accept supplemental submissions under other circumstances undercuts the purpose of the streamlined procedures established by ICANN.
The Panel has considered the supplemental submissions of both parties and found them largely unhelpful in resolving the dispute, with the exception of the following2:
(a) The copy of the complaint filed by Mr. Foreman that alleges that Mr. Foreman’s license to Respondent has been terminated.3
(b) The October 5, 2004 letter from Mr. Foreman’s counsel stating that, in the arbitration between Mr. Foreman and Respondent, Mr. Foreman seeks “return” of the website and domain name and demanding that Respondent take certain action with respect to the domain name.4
The disputed domain name was registered in 1998, raising at least a potential issue as to whether the Policy applies. Complainant attached to the Complaint only a copy of Network Solutions’ dispute policy, which is the Policy approved in 1999; Complainant did not attach or make any reference to Respondent’s registration agreement, which would presumably be the means by which the dispute policy would be made applicable to the disputed domain name. Networks Solutions’ confirmation to the Center did not expressly state that the Policy applied nor did it identify the applicable registration agreement. However, the Panel takes notice that the current Network Solutions’ registration agreement (http://www.networksolutions.com/en_US/legal/static-service-agreement.jhtml) and numerous prior versions expressly incorporate the Policy. Further, given that the domain name has been registered through 2010, the domain name would have been renewed after 1998 and would have become subject to the Policy at the time of the renewal. Finally, Network Solutions’ confirmation implicitly suggests that the Policy applies by indicating that it is taking certain actions in accordance with the Policy. As a result of this and because the Respondent has raised no objection, the Panel finds that the original registration agreement has been superceded or amended to include the Policy.
(3) Respondent’s Notice
Respondent purports to include a “Notice of Failure to Join Indespensible [sic] Party,” claiming that Complainant has failed to name Mr. Foreman, the owner of the domain name. Respondent apparently misapprehends the nature of these proceedings.
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rule 1, s.v. “Respondent.” According to the records of the domain name registrar, Network Solutions, Respondent -- and not Mr. Foreman -- is the holder of the registration at issue. Therefore Mr. Foreman is not properly a “Respondent” in this matter. The proper respondent -- and the entity against whom relief may be obtained, see Policy, Paragraph 4(i) – is George Foreman Foods, Inc.
B. Burden of Proof
In order to prevail, the Complainant must prove:
(i) The <georgeforeman.com> domain name is identical or confusingly similar to Complainant’s GEORGE FOREMAN marks; and
(ii) Respondent has no rights or legitimate interest in the <georgeforeman.com> domain name; and
(iii) The domain name has been registered and is being used in bad faith.
See Policy, Paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a respondent’s bad faith registration and use under Paragraph 4a(iii) (see Policy, Paragraph 4(b)), as well as examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name (see Policy, Paragraph 4(c)).
(1) Identical or Confusingly Similar
Complainant has established its rights in the GEORGE FOREMAN marks by providing proof of its federal trademark registrations along with the other information. The <georgeforeman.com> domain name is virtually identical to those marks.
The Panel rejects Respondent’s argument that where a domain name consists of a celebrity’s name, the issue should be whether the domain name causes confusion, not whether it is identical to the Complainant’s mark. Neither the Policy nor the Rules articulate a test for determining “confusing similarity” and panels have handled this issue differently. Some have considered factors relevant to an analysis of likelihood of confusion, such as the distinctiveness of the mark, how well-known the mark is, how long the mark has been used, and the nature of the goods and services with which the mark is used. Others have limited the test to determining the degree of resemblance of the domain name and mark at issue as to appearance, sound, and meaning.
This Panel concludes that the language of Paragraph 4 of the Policy supports the view that “confusing similarity” should be determined only by the degree of resemblance. This is because Paragraph 4(a) refers only to the identity or confusing similarity of the domain name and mark. In contrast, Paragraph 4(b)(iv) does expressly refer to “likelihood of confusion . . . as to the source, sponsorship, affiliation, or endorsement.” The Panel also finds persuasive the fact that the Policy is intended to be international in scope, which suggests that -- absent express language -- a panel should be cautious about interpreting the Policy as incorporating a test that may not exist in a number of jurisdictions. See Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499 (August 16, 2002). Because the Panel does not view “confusing similarity” as involving an assessment of likely confusion, it rejects Respondent’s argument and declines to adopt a rule applicable only to names of celebrities.
The Panel finds that Respondent’s domain name is identical to a mark in which Complainant has rights.
(2) Rights or Legitimate Interests
Establishing that Respondent has no rights or legitimate interests in the domain names -- proving a negative -- can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within a respondent’s knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut complainant’s evidence.
The Panel concludes that, although Complainant may have met its initial burden on this element,5 Respondent has rebutted that evidence and established that it has rights or legitimate interests in the disputed domain name.
Complainant acknowledged that Respondent had obtained a license from George Foreman granting Respondent the right to use the <georgeforeman.com> domain name. Indeed, Complainant attached a copy of that license agreement to its own Complaint. The license agreement grants to Respondent the right to use, among other things, “GeorgeForeman.com and all Internet addresses utilizing [Mr. Foreman]’s name . . . .”
Complainant’s argument hinges on its assertion that that license agreement has been terminated, an assertion supported by an allegation in a complaint recently filed by Mr. Foreman against third parties.6
However, the Panel concludes that Respondent has established that its use of the name “George Foreman” was -- and continues to be -- pursuant to rights granted by Mr. Foreman. Respondent concedes that Mr. Foreman and Respondent are engaged in arbitration and that they disagree as to whether the license agreement has been terminated. However, even if the written license agreement has been terminated, Respondent has not -- as yet -- lost all rights to the disputed domain name. The correspondence from Mr. Foreman’s counsel confirms this by referring to Mr. Foreman’s intention, in the arbitration, to seek the “return” of the domain name and demanding that Respondent “protect” it in the interim. This is a recognition that Respondent continues to have some rights and legitimate interests in the domain name, albeit subject to the outcome of the arbitration.
The Panel therefore finds that Respondent has rights or legitimate interests in the disputed domain name.
(3) Registered and Used in Bad Faith
As noted above, a complainant must establish each of the three elements outlined in Paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith.
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Dated: December 3, 2004
1 In light of Respondent’s prompt action, the Panel accepts the revised submission, pursuant to its discretion under Rules 10 and 12.
2 The Panel considered only those few new facts and arguments presented that had not previously arisen and responses to arguments or rebuttal that could not have been reasonably anticipated.
3 The fact of this public allegation had not arisen as of the time that the Complaint was filed.
4 Although this letter was apparently received by Respondent prior to the time that the Response was filed, it was presented in rebuttal to the Reply.
5 Under other circumstances, a complainant who concedes that the respondent was granted rights by a third party and merely asserted a belief that those rights had terminated might fail to meet this burden.
6 Complainant also argues that Respondent is prohibited by its license agreement from interfering with its own agreement with Mr. Foreman. The pertinent language appears under the heading “Non-Competition, By [Mr. Foreman]” and states: “Nothing provided for in this Agreement shall in any way prevent or interfere with . . . [Mr. Foreman]’s current agreements with [Complainant].” Complainant’s argument seems to be that any use of the disputed domain name to sell meat and protein products -- as expressly authorized elsewhere in the license agreement -- “interferes” with its arrangement with Mr. Foreman. The Panel concludes that this argument raises issues of contractual relationships, rights, and obligations that are well beyond the scope of this proceeding.